Posted
by
timothy
on Thursday January 23, 2014 @11:50AM
from the telling-mom-what-you-did dept.

jfruh writes "The Supreme Court issued a ruling that might help marginally curb patent madness. Ruling on a case between Medtronic and Mirowski Family Ventures, the court rules that the burden of proof in patent infringement cases is always on the patent holder. This is true even in the specific case at hand, in which Medtronic sought a declaratory judgement that it was not violating the Mirowski patents."

placing the burden on the patent holder to prove the patent is NOT the result of:

- Patent slamming to game the system (e.g. submitting the same fucking thing 100 different times hoping one submission will slip by an overworked patent reviewer)- Patenting something already patented- Patenting something that is already obvious- Submarine-patenting

(e.g. submitting the same fucking thing 100 different times hoping one submission will slip by an overworked patent reviewer)

I am not a fan of the current patenting system, but this is BS, a patent application costs $10,000, if the patent reviewer is overworked it has nothing to do with the abuse of the system, even considering a cost of $200,000 to the USPTO per patent reviewer including all the overheads a reviewer has to only review 20 patents a year to make the system viable.

I am not a fan of the current patenting system, but this is BS, a patent application costs $10,000

LOL...if someone is charging you $10K to file it for you, then you are getting ripped off.

http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm

That $10k price is actually not bad, as the due diligence search has to be done first by the patent attorney. Typically, I've seen patents average closer $20k to file. [richardspatentlaw.com] They may also be searching and filing in other countries as well, CYA. So, if he's getting a 10k price he's doing ok. I would not try to self apply if you want the patent to stick. You need a good patent attorney.

But what ACTUALLY happens is that the big companies have their own attorney on staff, whose job it is to robosign "due diligence searches" without bothering to do them.

I don't think so, but if you could point out an example I'd be more inclined to see your point. Most Fortune 100 corporations don't have patent attorneys on staff as employees. They may retain a firm (like they do for accounting audits), but that's not on staff. There are a few exceptions that I do know of, IBM, Intel, HP and Texas Instruments I know for a fact have patent attorneys in house but they are also R&D machines! I assure you they do the due diligence, most times internationally. Because of th

LOL...if someone is charging you $10K to file it for you, then you are getting ripped off.

The cost isn't the patent submission fees. The primary cost is the lawyer you'll inevitably have to hire during the process. Getting a patent successfully through is actually more complicated than it might seem at first glance.

More importantly, if you have your own lawyers on your payroll, the cost is negligible. Especially when you consider that those lawyers seemingly only spend 5 minutes on Google doing 'due diligence'. If they spent much longer, then far less obvious/pre-existing patent applications would be made. That, of course, doesn't excuse the patent examiner for rubber stamping it after seemingly spending another 5 minutes Googling the claims.

The USPTO lowered its standards [at the behest of Congress] to lower its standards to reduce its backlog. If an application is denied, it can be refiled [many times]. The only way to truly clear it is to approve it [and toss it into the court system]:http://www.techdirt.com/blog/i... [techdirt.com]

$10,000 times 20 is a trivial amount [on a corporate level] compared to an NRE budget for a legit R&D outfit. There seems to be plenty of [unscrupulous] VC money to back such refilings to get something that ca

The Federal Wage System is the pay scale used for low-wage, hourly government workers. I'm not going to do _all_ the work, but the lowest rate I could find--before I got bored--related to FWS is $10.27/hour. (http://www.cpms.osd.mil/Content/AF%20Schedules/survey-sch/045/045R-17Sep2013.html)

They get paid significantly better than minimum wage. Source: I know someone who works there, I looked into it several years ago, and I just used Google.
They can start at GS-5 (min. ~$42k) and top out at GS-15 (max. ~$155). Those are ranges, and most examiners have higher degrees (the ones I know have Ph.D.s with postdoc experience) and are probably hired at GS-9 or so probably starting at >$70k - but don't forget it's not cheap to live in/near D.C. The real upper limit is probably $110-120k after 8-10

well, specifically, they wouldnt be getting the funds for each one they pass, or each one they fail, but each one that comes to their desk. if they each get 20 patents per year for 200k$, they are much more likely to actually do the work.

No they wouldnt. If I got x amount of money per y, then you maximize y to maximize x, so the more patent apps that cross their desk the more they get paid, which means that if I DONT do my job, and just pass or fail on a whim the more money I get paid, add in just enough work to get it done and pass a review..
It would be better to pay them enough to live plus a bonus, but they lose x% of their bonus for each patent that comes back invalidated, that would make them want to work.

I'd also like software patents to have a working implementation which is what's actually covered by the patent.....much like physical patents. If I patent "sorting" (and yes, many software patents are that vague), it doesn't allow for bubble sort, selection sort, insert sort, quicksort, etc.

Physical patents do not require a working implementation, and haven't in quite some time. Rather, they only require enough detail that someone skilled in the art could create a working implementation of what's claimed using only common knowledge and the patent itself.

For software, that means that if you're claiming a particular sorting algorithm, you have to include enough details about how that algorithm works that another programmer could duplicate the sort... but if you're not patenting the comparison operation, you don't have to include that, even if your algorithm requires some particular comparison to work. That's a trade secret.

Also note that the title and abstract really don't matter. Most of the "vague" patents reported on Slashdot and other anti-patent sites have vague titles, but the claimse themselves are usually pretty detailed about the specific situation where the method applies.

Continuing the analogy, a method for sorting 3D models might have a title of "Comparative sorting method", and an abstract that describes the need for sorting, both of which are sure to annoy Slashdotters. The patent claims could then detail a particular way of framing the problem, where we sort models based on their ratio.of filled-to-empty space, with a weighted preference for the appearance of space from particular projections. The algorithm itself might appear at first glance to be, say, a quick-sort, but with a few little tweaks to accommodate the multiple sorting criteria. As above, the actual method for computing filled space may be a secret that's left out of the patent, even though the patented mechanism is really useless without it. The end result is a patent that looks like "quick sort... now in 3-D!" but really describes a useful, novel, and non-obvious solution for a very specific problem.

And yet, if I implement the same type of feature (with no knowledge of the magic sauce), I'm in violation of the patent.....even though it was obvious enough for me to come up with the same solution. Either the patent should include everything you need in order to implement the solution (so that I know when I'm violating it), or it shouldn't be a patent.

Yes, you would be in violation of the patent if you duplicate everything in the claims, but only if you duplicate what's in the claims. If you're using their magic sauce in some other context, such as a 3-D model catalog rather than a sorting algorithm, you're in the clear. If you can make their algorithm work without one particular claimed step (or doing that step differently), you're still fine. The patent itself does contain everything you have a risk of violating.

Physical patents tend to include a great many details about how the systems described work. Even without illustrations, they're sufficiently documented that they actually CAN be constructed from the claims and any other supplemental materials.

Contrast to most software patents which list some arbitrary "using undisclosed comparison algorithm, verb the noun". The actual verb and noun are irrelevant because there is no way to get past the comparison algorithm. As an example, the patent you describe is compl

Let us hope the lawyers read patents more thoroughly than you read my post.

The innovative part of the described patent isn't the comparison. It's the modifications to quick-sort that let it work accurately on the multiple criteria the comparison operation is providing. A quick-sort for 3-D models that uses a single criterion would be outside the patent claims, regardless of the comparison used. Similarly, a merge sort for 3-D using multiple criteria wouldn't fit the patent claims, so it'd be safe, as well.

The separation of delivery information from the ordering process, for the purpose of immediate order placement, was not obvious in 1997 when the patent was filed. In the 16 years since then, it has become obvious, as web-based workflows have matured.

You are claiming the patent is obvious. The burden of proof [wikipedia.org] is on you to prove that it's obvious. Surely there must be some example of a similar system, if it was so obvious in 1997?

Instead of actually proving your claim, you're asking me to prove that something was not possible [wikipedia.org], to which the reexaminations of the patent in question serves as evidence of the adequate non-obvious nature of the surviving portions of the patent.

ok, so we'll assume: you do think it is obvious. So clearly, you agree that some patents can be obvious, and still get through the patent office.

Now let's see this: do you understand that there is a difference between being obvious, and having prior art? That is, do you understand that an invention might have no prior art, but still be obvious?

I'll be the contrarian here and state the belief that this ruling isn't so good.

The major issue, of course, is that there is massive abuse to the system, but if you look at what the system is supposed to do I think this ruling turns things more decidedly in the favor of large companies.

The idea of the patent system was that anyone could patent their grand idea and then have legal backing to protect it in court from someone that uses the idea without consent. The filing fees were also designed to be low to keep the barrier of entry low enough that "the little guy" could get the same protection as the big corporations.

Prior to this ruling (ignoring the shake downs by trolls) an individual or small company had a chance of winning a patent case against much larger entities (motions and legal wrangling aside) as the process of discovery forces the defendant to show their cards and prove they aren't infringing with no upfront cost to the plaintiff.

With this ruling, if you come up with the next great search algorithm (software patent absurdity aside) and Bing/Google/Yahoo steals it you now have to foot the bill for the discovery. Without the court order you also aren't going to get very far in that process as they aren't exactly going to welcome you into their office, sit you down at a console, and give you access to their code.

So what this ruling does, in my opinion, is give the larger companies the right to violate patents from smaller entities with near impunity. It also (as someone suggested further down regarding OSS projects) gives rise to a whole new possible "reverse-patent" trolling business scheme.

Without the court order you also aren't going to get very far in that process as they aren't exactly going to welcome you into their office, sit you down at a console, and give you access to their code.

That's only really valid for software patents. Since you could just buy one of their widgets and pull it apart.

If it makes software patents less appealing to file and more costly to pursue and harder to troll, good. They shouldn't be patents in the first place

Patent trolls had gotten to the point of just threatening people and winning because only the biggest players could defend themselves. Couple this with the fact the PTO giving out dubious patents, and the low cost of suing someone how can things get any worse?

I disagree, based on presumed innocence. If you accuse me of infringing on your patent, you should be required to provide proof, as would be the case in any other legal proceeding. If I'm charged with a crime, the burden is on the prosecution to prove my guilt. Consider also a civil case. if you accuse me of being negligent in keeping my floor clean, causing you to slip and fall, the burden is on the plaintiff to prove that the floor really was a mess and I was negligent in not cleaning it.

If you sue someone for patent infringement you have always had the burden of proof, even before this ruling. All this ruling is saying is that if you threaten to sue someone, and they go to a judge first asking you to put-up or shut-up, the burden is still on you as the patent holder, same as if you had sued them.

Secondly, this ruling does nothing to limit the discovery process. As a small inventor suing a big company you still have the same subpoena powers during discovery as you did before.

In other words, the Supreme Court simply reaffirmed that accused infringers are innocent until proven guilty, regardless of the procedural nuances of how the lawsuit is initiated. None of the concerns you voiced will become worse due to this ruling.

The idea of the patent system was that anyone could patent their grand idea and then have legal backing to protect it in court from someone that uses the idea without consent. The filing fees were also designed to be low to keep the barrier of entry low enough that "the little guy" could get the same protection as the big corporations.

This is completely false. Patents were never about the "little guy". Their purpose is to benefit society by providing an advantage to disclosing the secrets of invention so society can learn. Prior to patents, technology was often a closely guarded secret, belonging to individuals or trade guilds, secrets that were often lost with the deaths of the people involved. By making disclosure a more attractive option than secrecy, society could benefit by learning from the details of the inventions.

Prior to this ruling (ignoring the shake downs by trolls) an individual or small company had a chance of winning a patent case against much larger entities (motions and legal wrangling aside) as the process of discovery forces the defendant to show their cards and prove they aren't infringing with no upfront cost to the plaintiff.

With this ruling, if you come up with the next great search algorithm (software patent absurdity aside) and Bing/Google/Yahoo steals it you now have to foot the bill for the discovery. Without the court order you also aren't going to get very far in that process as they aren't exactly going to welcome you into their office, sit you down at a console, and give you access to their code.

If a company files a motion against you to for a declaratory judgement that it is not violating your patents, that motion would only be able to cover the material that it disclosed to the court. A judgement could never cover anything that they refused to disclose to the court.

You can't get a court to rule that something it has no knowledge of was legal. It has no jurisdiction to make such a ruling.

The burden of proving they infringe may rest on you, but only in terms of the subject material they are trying

...I've become increasingly used to insanity when it comes to the court and advancing technology. Next you'll tell me that the court will find that it's unconstitutional to collect certain kinds of data without a warrant...

The summary omits the central issues in the case. Medtronic had previously licensed patents from Mirowski Family Ventures for some of their older devices. Medtronics claimed their new devices didn't use the same methods and therefore decided not to continue to license the patents. The Federal Circuit Court (which is notoriously patent-holder friendly) decided that since Medtronics had previously been a licensee and they were the plaintiffs in the declaratory judgement suit (they had sued pre-emptively to

I can see this leading to some pretty costly discovery for companies being sued.

Because it's going to amount to "in order for us to prove you violated our patent, we need you to hand over all of your information so we can find the proof".

I hope there is a provision for saying "OK, but we're going to charge you $100 million for our time in getting this" -- because otherwise this just allows the patent trolls to cause the people they accuse to incur massive costs which might make settling cheaper.

You shouldn't be able to make someone bear the cost of you suing them based on something you can't prove without them doing the work for you.

This reminds me of the SCO lawsuit, where the most they ever found was, what, 7 lines of infringing code which SCO themselves had nicked from AT&T UNIX?

This is EXACTLY the problem right now: filing an infringement claim is trivial, it only requires the plaintiff to assert infringement (not detail it). That currently triggers discovery which is costly for the defendant. Defendants thus settle for less than the cost of discovery. That is the essence of legal blackmail/patent trolling.

SUPPORT PATENT REFORM IN THE SENATE.

The markup happens in March. There is a hearing today as well.

Stay early discovery or require costs to be borne by the plaintiff.Permit fee shifting when plaintiff's lose.Identify the real party in interest and REQUIRE a bond - shell companies currently do most of the trolling and are judgment proof (have no assets).PROTECT END USERS - using an API can get you a patent infringement lawsuit (if the API is alleged to infringe), offering wireless in your cafe gets you sued (because Cisco allegedly infringed on someones patent and you are using their device).

OK since apparently you or the moderators can't seem to get the obvious....

Instead of "fixing" the patent system (which they NEVER intended to do BTW) they have ensured that the only people who will be able to obtain and DEFEND (the important part) their patents will be large corporations with the lawyer muscle to achieve this new level of proof.

The small innovator stands almost no chance now if they ever did - although at least a few have succeeded in the past.

This reminds me of the SCO lawsuit, where the most they ever found was, what, 7 lines of infringing code which SCO themselves had nicked from AT&T UNIX?

A little off-topic I know, but IBM was never found to have infringed on any code from SCO. SCO tried to *claim* some code that was already licensed under a FLOSS license was the same as their code and thus infringed on their IP. They made a big deal of this to the press forcing them to sign NDA's & "showing them the code". [theage.com.au]

Correct. The long version: The plaintiff in a patent case is usually the patent-holder, who is seeking damages for infringement. In those cases, the patent-holder-plaintiff already had the burden of proof. In this case, the (potentially infringing) plaintiff is seeking protection from patent infringement lawsuits by suing the patent holder, requiring the (patent holder) defendant to prove that the patents are valid and/or that the plaintiff infringes the patents. Normally (and the appeals court found), the plaintiff would have the burden of proof. According to the appellate ruling, the plaintiff (potential infringer, seeking protection) would have to prove that they were not infringing, or prove that the patents were invalid. The Supreme Court reaffirmed the lower court ruling: The patent holder, whether plaintiff or defendant, must prove that the other party (plaintiff or defendant) infringed the patents, and that the patents are valid.

No, they ruled the patent owner always has the burden of proof. It so happens, that's the defendant. It is the "always" that was the important part of the ruling.

Until fairly recently, if you licensed a patent, you gave up the right to contest it. That changed, but there was still some grey.

In this case, the Plaintiff had licensed for one product but wanted a judgement concerning a newer product. The Defendant asserted the burden of proof was on the Plaintiff since they had licensed it and now wanted to

This ruling on its own might only help slightly. But aside from that, I think this kind of 9-0 ruling (!) coming from the U.S. Supreme Court is encouraging for other patent-related cases that the Court will soon be hearing.

How hard would it be for OpenSource Projects and Small Companies to file for a declarative judgement lawsuit for every software patent held by trolls? I'm assuming that filing fees would get cost prohibitive quickly, but would we be able to DOS attack the patent trolls and the courts they use to prove the point?

Fairly hard. One of the requirements for asking for a declaratory judgement is that you have to either have been sued or have a reasonable fear of being sued by the patent-holder. If the patent-holder hasn't actually sued anyone yet, it's easy for them to v get DJ actions dismissed. Even if they're sued others but not sued you, traditionally it's been easy for them to argue that you don't have any reason to believe you'll be sued yet (not that that is not a promise not to sue you in the future). In this par

One of the requirements for asking for a declaratory judgement is that you have to either have been sued or have a reasonable fear of being sued by the patent-holder.

That's not the standard for declaratory judgment jurisdiction in patent cases and hasn't been since the 2007 MedImmune case, in which the Supreme Court rejected the Federal Circuit's "reasonable apprehension of suit" test. The MedImmune standard is "whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." MedImmune v. Genentech

Big practical problem: that would require you giving away all the details of your product without placing the patent troll under any legal obligation not to give them out to others. From a legal standpoint they're also not under any obligation to answer your query or evaluate your claim that you infringe, so they could just bin your letter and wait without any legal penalty. You'd have to actually make a claim against them to start any sort of clock ticking, eg. by filing to invalidate their patent on the g

Cue a million companies queuing up to sue for declaratory judgement in order to force companies to show their cards instead of vague "something you do violates some part of one of our patents pay 20% of your income or be sued" threats.

Now Google can fight MS in regards to their claims of Patent Infringenment in Android and force them to prove it. If they fail, then MS is going to be out lots of money for the licenses they've charged for.

Better yet, just burninate the software patent countryside, salt the earth, and maybe save a prior picture of that quaint and evil practice for students to shake their heads at in disgust when they read their textbooks. Patenting math and algorithms is bad, chills software development (proprietary and especially otherwise), and only dignifies "IP" cartels like MPEG-LA.

I get it for patent trolls but if it's a legit ripoff of a patent of mine now I have to play P.I. and break into their office and interview people and steal papers and hide recording devices? Because otherwise good luck finding proof from a tightly locked down company giving you the runaround. They won't hand over so much as a blueprint without a court order.

Except in this case the party being sued was the patent holder. They needed to defend their request for royalties. It's odd because normally the plaintiff needs to prove they were damaged rather than the defendant proving that they would be damaged.

> if you're suing somebody... you have to "make your case" so to speak.

Until now. Now, if you sue an inventor the burden of proof is on the person being sued. The plaintiff is asking that the court proactively rule that nothing they ever did infringes on any of defendant's patents. SCOTUS ruled that the defendant now has the burden of proof, so they have to figure out which product plaintiff is concerned about, which patent it might infringe and how, or else the court rules that none of the products i

By analogy, it's the same as me petitioning the court to rule that I never stole anything from you. The court agrees, saying that unless you figure out the puzzle and guess what I stole and when, I'll be deemed innocent and you can't come after me later when you realize that your gold watch is missing.

No. By analogy, it's the same as you agreeing to pay someone $50/per person to stay in a hotel room and paying them $200 for the 4 people in your party. Then a 7 more friends later crash your party. The owner of the hotel now wants $350 more dollar from you based on the original agreement of $50/person and you sue the owner asking for a declatory judgment that you only owe the $200 you already paid because the hotel accepted the original payment and it's up to the owner to prove that those 7 extra people

That's because of the nature of the proceeding the ruling covers. This is a case where the (soon to be) defendant hits the (soon to be) plaintiff up for royalties, then starts rattling the saber. Then the plaintiff effectively says "put up or shut up" by taking it to court themselves for a declaratory judgement. It is the defendant who is making the positive assertion of damages in this case, so it i the defendant who has to prove it.

Prerequisite for a declaratory judgement though is that the patent-holder has to have already made claims that you infringe sufficient to make you reasonably fear being sued by them. But sometimes the would-normally-be-the-plaintiff won't actually come out and sue, they'll just dance around and threaten without ever coming out where the defendant could defend themselves. Think a patent-holder going around to investors talking about how you will be sued and lose all your money, convincing investors to avoid

this is a little different because the case was filed by the defendant basically. They wanted the court to clarify their non-infringement in advance of any litigation that the patent owner may have decided to spring up at a later time.

"Innovent until proven guilty" usually only applies to the normal direction of cases, not ones that operate in reverse like this does.

I pondered this a bit to see if I could identify an easy avenue of abuse for this, but it looks pretty good. If you want to get into a market

Yep. If you sue someone, you have to prove your case.Until now. Now, with this ruling, if you sue an inventor you don't have to prove anything. It's now up to the defendant to prove that the plaintiff did something wrong. This is insane.